[00:00:00] Speaker 03: Our final case for today is Trader Joe's Company versus Trader Joe's United case numbers 24-720 and 24-2826 [00:00:40] Speaker 00: Good morning, Your Honors. [00:00:41] Speaker 00: May it please the Court, Melissa Arbiscieri for Trader Joe's. [00:00:45] Speaker 00: I'd like to reserve three minutes of my time for rebuttal. [00:00:49] Speaker 00: The district court erred in dismissing Trader Joe's first complaint without any chance for leave to amend based on the fact-intensive question of likelihood of confusion. [00:01:00] Speaker 00: The court erred in dismissing the separate trademark dilution claim based on a nominative fair use defense that Trader Joe's United did not raise, and that is not applicable here. [00:01:11] Speaker 00: And the court erred in prematurely and incorrectly applying the Norris LaGuardia Act. [00:01:17] Speaker 00: Unlikelihood of confusion, I want to make four key points. [00:01:20] Speaker 00: First, the court erred in looking and requiring identicality when the law looks to relatedness for the goods and looks to similarity for the marks. [00:01:31] Speaker 00: Second, on similarity, the court erred by ignoring the word mark entirely, by elevating differences over similarities, and by failing to recognize the importance of the strength of Trader Joe's mark when it looked at both similarity and relatedness. [00:01:48] Speaker 00: Third, the court put undue weight on the fact that Trader Joe's United is a union. [00:01:54] Speaker 00: And fourth, the court erred by focusing exclusively on the point of sale and not acknowledging the real likelihood of post-sale confusion. [00:02:05] Speaker 00: On the post-sale confusion point, there's two cases from this court that are particularly relevant. [00:02:10] Speaker 00: One is the Victoria's Secret case that we said in our brief, and the other one is the Academy of Motion Pictures case. [00:02:16] Speaker 00: In both of those cases, it was clear [00:02:19] Speaker 00: The point of sale confusion was unlikely. [00:02:21] Speaker 00: The hot pink tank top was only sold in Victoria's Secret stores. [00:02:26] Speaker 00: And the Star Award, anyone who was purchasing it for their employees would know that they were not purchasing an Oscar. [00:02:32] Speaker 03: So the court below seemed to be interested in this intersection between a potentially ongoing labor, well, not potentially, an ongoing labor dispute and the alleged trademark infringement. [00:02:44] Speaker 03: And it relied on district court cases from out of circuit. [00:02:48] Speaker 03: I think both to address the injunction portion of this but also trademark infringement. [00:02:54] Speaker 03: I guess my first question is if there's an ongoing labor dispute does that preclude trademark infringement actions themselves? [00:03:03] Speaker 00: It does not. [00:03:04] Speaker 00: There's no labor union exception to the Lanham Act. [00:03:07] Speaker 00: And if you look at the union cases that the district court relied on, they really are different in kind in two important ways. [00:03:14] Speaker 00: In the vast majority of them, what was being challenged was the use of the employer's mark, either to talk about the employer or to name the union. [00:03:23] Speaker 00: And in the other cases, these were instances where the mark was being used to criticize the employer, to disparage the employer. [00:03:31] Speaker 00: They were used in parity situations, and they were used really in the context of union organizing. [00:03:37] Speaker 00: Those same cases, when they talked about this distinct concept, which is the sale of goods and commerce, made clear that that would be a very different case. [00:03:45] Speaker 00: The Senco case, footnote two, says that clearly, and several other courts go down that same line. [00:03:52] Speaker 00: And so I think when you're looking at the Lanham Act, and you're right that the district court looked at it for both the Norris LaGuardia Act and for the Lanham Act, but focusing first on the Lanham Act, [00:04:03] Speaker 00: The way that the district court used, I think, the union context was through looking at the website itself. [00:04:10] Speaker 00: But I think the problem with doing that is multifold. [00:04:14] Speaker 00: One is we're on a motion to dismiss and the court made inferences against us at this stage by looking at how a consumer might navigate the Trader Joe's United website. [00:04:24] Speaker 00: I think the second problem is that it bled into several different sleek craft factors where the analysis doesn't apply. [00:04:31] Speaker 00: I think the third point is the post-sale confusion one I started with, which is if you see someone walking down the street, Trader Joe's tote bags are very popular. [00:04:40] Speaker 00: They're very well known. [00:04:41] Speaker 00: And if you see someone walking down a street carrying a Trader Joe's United tote bag, there are a number of different designs. [00:04:47] Speaker 00: If you look at the excerpts of record, page 207, for example, there's a pride design. [00:04:52] Speaker 00: And if you saw someone walking down the street carrying that tote bag, I think there's a very real risk. [00:04:58] Speaker 00: that someone might think, oh, this is Trader Joe's new tote bag design. [00:05:02] Speaker 00: I'd like to get one of those for myself. [00:05:05] Speaker 04: Can I just jump in on that? [00:05:07] Speaker 04: Yes, absolutely. [00:05:09] Speaker 04: In your briefs, you made a big distinction [00:05:11] Speaker 04: which may be okay between core union activities and the sale of consumer goods. [00:05:17] Speaker 04: But as you just sort of highlighted, you know, unions often sell things in the middle of the labor dispute to fundraise and get their message out and do some branding. [00:05:27] Speaker 04: And so it's not that, I'm not sure where that line is and how you would fix that line. [00:05:34] Speaker 04: I mean, what if the union just wanted to sell things to generate money for the labor dispute? [00:05:40] Speaker 00: Yeah, I don't think the Lanham Act allows that and maybe two key points on that. [00:05:45] Speaker 00: If you look at all of the union cases, and there's a lot of them cited in the brief, these aren't instances where the unions are going out and selling merch in commerce. [00:05:52] Speaker 00: Instead, they're instances of flyers and hand bills and dodgers. [00:05:56] Speaker 00: and other things that are really core union activity. [00:06:00] Speaker 00: I think once you go from that setting and move over to the actual sale of goods and commerce, it changes the analysis, because then you're really in the heartland of the Lanham Act, as the Jack Daniels case recently said. [00:06:13] Speaker 00: You're using the mark as a mark. [00:06:15] Speaker 00: I guess the second point I would make, and maybe a distinction just to get that out there, [00:06:21] Speaker 00: is the designs that are being challenged here are not all of the designs that the union sells on their website. [00:06:27] Speaker 00: There's merchandise being sold that we did not challenge. [00:06:30] Speaker 00: It's at page 210 of the excerpts of record, and there are others. [00:06:34] Speaker 00: The focus instead of this complaint, and it was really intentionally narrow, was on instances where they were using our mark in a way that was likely [00:06:41] Speaker 00: to confuse, and so there are other things you can do to raise money for the union, but you simply can't say, I mean, there are plenty of great charities out there, and you can't, in the name of, you know, getting money or soliciting money for your charity, start selling Taylor Swift t-shirts out there. [00:06:58] Speaker 00: That might generate a lot of money, that might be a great thing, but you just can't infringe on the trademark as a way to make money for a charity and as a way to make money for the union. [00:07:07] Speaker 03: You were anticipating my question. [00:07:08] Speaker 03: So if the union had used Trader Joe's union for its merchandise but not adopted the red lettering or the circle or other things that seem more potentially associated with the Trader Joe's marks, would that be a different story then? [00:07:25] Speaker 00: I don't think it would be, because we have a word mark as well. [00:07:29] Speaker 00: And so the word mark actually is really critical and central. [00:07:33] Speaker 00: The fact that it did adopt other things, like the red coloring and a similar font, I think only enhances the similarity. [00:07:40] Speaker 00: But if you look to go back to the Victoria's Secret case again, and maybe also the Palm Wonderful case, [00:07:46] Speaker 00: Those are two instances where the real similarity was the use of the word mark. [00:07:50] Speaker 00: So one was the word delicious. [00:07:52] Speaker 00: The other one was the word palm. [00:07:54] Speaker 00: But everything else really about the two goods looked quite different. [00:07:59] Speaker 00: And so the picture in Palm Wonderful, and it shows the two images side by side, it's at page 1128 of the decision, the word palm is the same. [00:08:08] Speaker 00: everything else is different. [00:08:10] Speaker 00: The coloring is different, the lettering is different, you know. [00:08:13] Speaker 04: So you would agree then if the union had said Trader Joe's in different font, different color? [00:08:18] Speaker 04: They could do that. [00:08:19] Speaker 04: They could put it on a tote bag, right? [00:08:21] Speaker 00: No, no, sorry. [00:08:22] Speaker 00: I was saying the opposite. [00:08:23] Speaker 00: They couldn't do that either because we have a word mark, Trader Joe's. [00:08:28] Speaker 04: They can't use the words Trader Joe's? [00:08:33] Speaker 00: They can certainly use it to identify themselves as a union. [00:08:36] Speaker 00: They can use it to talk about their employer. [00:08:37] Speaker 00: They can use it in union organizing activity, the flyers examples and the like. [00:08:42] Speaker 00: What they can't do is take our word mark and put it on a good and sell it in commerce. [00:08:48] Speaker 00: You know, here it's easier because there's a lot of additional things beyond the word mark, but the word mark really is key. [00:08:55] Speaker 00: And that's what Victoria's Secret and Palm Wonderful show. [00:08:59] Speaker 03: I mean, in Victoria's Secret... You're sort of, I mean, isn't it pushing it? [00:09:02] Speaker 03: Let's say they have a, they create a T-shirt that says Trader Joe's. [00:09:07] Speaker 03: It sucks. [00:09:10] Speaker 03: Apologies. [00:09:12] Speaker 03: But it's a parody and they're selling it and it's to identify the employer and their organizational activities related to that. [00:09:20] Speaker 03: You're saying the use of that mark in that context because they're selling the shirt. [00:09:23] Speaker 03: would still run a foul on Lanham Act at that point? [00:09:26] Speaker 00: I think there's two things going on there. [00:09:28] Speaker 00: One is when you're thinking about likelihood of confusion, yes, when you're doing it in the context of a parody and it's really clear that it's not coming from the employer and it's equally clear that the trademark holder is not going to support it. [00:09:42] Speaker 00: Then that definitely plays into the likelihood of confusion analysis. [00:09:45] Speaker 00: That's what the Jack Daniels decision recognized. [00:09:47] Speaker 00: But we also have a trademark dilution claim. [00:09:49] Speaker 00: I don't want to lose sight of that and focusing on likelihood of confusion because trademark dilution does not require a likelihood of confusion. [00:09:57] Speaker 00: It focuses on the similarity and the concern there is with eroding. [00:10:01] Speaker 00: And so our claim here is trademark dilution by blurring, but there's also trademark dilution by tarnishment. [00:10:07] Speaker 00: So instances like that that might tarnish the mark are viable claims when you have a famous mark like Trader Joe's. [00:10:16] Speaker 00: I don't want to forget that separate claim here. [00:10:19] Speaker 03: So why was nominative fair use not the appropriate way to analyze the dilution claim in your view? [00:10:25] Speaker 00: So a couple of reasons. [00:10:27] Speaker 00: One, it wasn't raised, but maybe more substantively. [00:10:30] Speaker 00: Nominative fair use for the trademark dilution claim. [00:10:33] Speaker 00: It's a statutory exclusion. [00:10:35] Speaker 00: It's at section 1125C3A. [00:10:39] Speaker 00: And what it says is, nominative fair use doesn't apply when you're using it as a designation of source. [00:10:46] Speaker 00: And so when you are designating the source of your own goods, whether it's the t-shirt, tote bag, mug here, it is just not an issue of nominative fair use. [00:10:55] Speaker 00: And again, that's something the Supreme Court got at in the Jack Daniels case in saying that's not what it is focused on. [00:11:02] Speaker 00: In trademark dilution, it's statutory. [00:11:04] Speaker 00: But this court also has cases. [00:11:05] Speaker 00: that say nominative fair use is more the situation where you're actually talking about the trademark holders product. [00:11:12] Speaker 00: So you're in comparative advertising, you're doing a parody kind of situation and that's just not this case. [00:11:20] Speaker 01: No, I mean, you asked that question I was going to ask. [00:11:22] Speaker 01: So free button for a rally, I love Trader Joe's union. [00:11:27] Speaker 01: Okay. [00:11:29] Speaker 00: So the free buttons are different, but they're different because of the in commerce requirements. [00:11:33] Speaker 00: So the Lanham Act has a separate requirement that it has to be in commerce. [00:11:36] Speaker 01: That button is sold in support of union activities. [00:11:40] Speaker 00: So remind me what the buttons. [00:11:41] Speaker 01: I love Trader Joe's. [00:11:43] Speaker 00: Yeah. [00:11:43] Speaker 00: So that is, I think, still a problem because it could suggest that Trader Joe's is supporting or affiliating with that message. [00:11:52] Speaker 00: And that's the key to trademarking trademark. [00:11:55] Speaker 00: It's having control over your message. [00:11:57] Speaker 00: Trader Joe's spent 50 plus years developing this very strong mark and exercising control over it. [00:12:02] Speaker 00: It doesn't license it to anybody. [00:12:05] Speaker 00: routinely polices and enforces the mark because trademark law basically requires it because you erode and you dilute the strength of the mark if you let others use it in the market. [00:12:17] Speaker 04: I'm sorry, I'm not sure I understood your answer to Judge Thomas's question, but you're saying that the union cannot have the words Trader Joe's on anything, whether it's free or sold? [00:12:28] Speaker 00: No, sorry, I'm saying that the free situation I think is different, but not because of likelihood of confusion. [00:12:33] Speaker 00: It's different because there's an in-commerce requirement. [00:12:35] Speaker 00: Okay, so they could. [00:12:37] Speaker 00: The free merch is something different. [00:12:40] Speaker 00: What we're focused on is when you're actually selling it in commerce and you're using the Trader Joe's mark. [00:12:47] Speaker 03: But the North LaGuardia Act, and I guess there's a dispute over whether this is related to an ongoing labor dispute. [00:12:55] Speaker 03: And the district court took judicial notice of certain facts about the sequence of events. [00:13:01] Speaker 03: Does that matter if, I mean, I take your point, which is selling merchandise with marks is not actually related to an ongoing labor dispute, regardless of the timing of when it's taking place or not. [00:13:14] Speaker 03: Does the sequence that the district court found make any difference if we agreed with that view? [00:13:21] Speaker 00: If you agree with me that this case does not grow out of or involve a labor dispute, then I don't think the sequence or the timing matters. [00:13:29] Speaker 00: But I do want to address the timing of it because I think it's important. [00:13:34] Speaker 00: The district court said that this was filed six days after a particular NLRB complaint. [00:13:39] Speaker 00: But if you actually look at the timeline, and I realize I am intruding on my rebuttal time, but if I could just spend a minute on this. [00:13:45] Speaker 00: The timeline is that Trader Joe's United existed for more than a year before this lawsuit was brought. [00:13:55] Speaker 00: We had no objection to them using the mark as part of their name, no objection when they launched the website, no objection when they [00:14:04] Speaker 00: engaged in organizing activities. [00:14:05] Speaker 00: They filed nine separate NLRB charges in the year leading up to this. [00:14:11] Speaker 00: What prompted this lawsuit was when on June 23rd, 2023, they decided to launch a merch store on their website. [00:14:19] Speaker 00: And what did we do? [00:14:20] Speaker 00: Four days later, we sent a letter to them saying, please stop selling merch on your website that has our mark on it. [00:14:26] Speaker 00: When they declined to do so, we sent another letter on July 5th saying the same thing. [00:14:30] Speaker 00: It was only after that [00:14:32] Speaker 00: that the NLRB complaint was filed. [00:14:36] Speaker 00: And so this lawsuit very much was prompted by the launch of the merch store, similar to how we enforce our trademark in a variety of other contests. [00:14:44] Speaker 03: Is it your view that the sale of merchandise can never be involved in an ongoing labor dispute? [00:14:49] Speaker 03: You know, I guess to take an earlier example, suppose the union is [00:14:53] Speaker 03: actively involved in a labor dispute and they've filed complaints with the NLRB and they're using the merchandise as a means to raise money in order to help Promote and support those efforts. [00:15:04] Speaker 03: Why couldn't we see that? [00:15:05] Speaker 00: That's a part of an ongoing labor dispute I think there's other fact patterns that could be closer if the merch itself actually publicized a labor dispute and this maybe gets a little bit into section 104 e and [00:15:17] Speaker 00: But 104e of the NLGA talks about publicizing a labor dispute. [00:15:22] Speaker 00: This march doesn't do that. [00:15:25] Speaker 04: It publicizes a labor union. [00:15:27] Speaker 04: What if it said Trader Joe's is anti-worker? [00:15:31] Speaker 04: I mean, that's clearly... [00:15:33] Speaker 04: And while NLRB charges are pending and there's obviously a labor, what if they sold that bag and just said it's unfair to workers and they were fundraising, they needed money for legal defense or pay unemployed workers, whatever. [00:15:46] Speaker 00: So I think that's a much closer case under the NLGA, but that's just not what [00:15:52] Speaker 00: the merchandise that's challenged here actually does. [00:15:56] Speaker 00: If you look at the designs in the complaint, it doesn't publicize a labor dispute in any way. [00:16:02] Speaker 00: Three of them are just literally say Trader Joe's United and have no other information on there at all. [00:16:08] Speaker 03: It has the fist and the box cutter. [00:16:10] Speaker 00: Right, so it has the fist. [00:16:12] Speaker 00: The box cutter, I'm not sure, has any, you know, well-recognized meaning, but the fist itself, I mean, the fist is a sign of solidarity, but it's not identical to saying it's a union. [00:16:21] Speaker 00: And in fact, somewhat coincidentally on my flight over here, I was looking at CNN and President Trump had just left his congressional address and his hand was up in the air. [00:16:30] Speaker 00: So it shows solidarity, but it doesn't necessarily relate it to the union. [00:16:35] Speaker 00: And most importantly, it doesn't identify that there's a labor dispute. [00:16:38] Speaker 00: There's plenty of labor unions out there. [00:16:41] Speaker 00: Just because a union exists does not mean a labor dispute exists, and it doesn't publicize anything specific about that dispute. [00:16:49] Speaker ?: OK. [00:16:49] Speaker 03: Any other questions? [00:16:49] Speaker 03: Great. [00:16:49] Speaker 03: We'll give you a little time for rebuttal. [00:16:51] Speaker 00: Oh, thank you. [00:17:00] Speaker 02: May it please the court, my name is Sonia Mehta and I represent the union Trader Joe's United. [00:17:06] Speaker 02: The district court properly held that Trader Joe's weaponized the legal system through this exceptionally meritless complaint to chill Trader Joe's United federal right to organize unions, which workers have done despite Trader Joe's unceasing labor practices. [00:17:25] Speaker 02: Even under de novo review, Trader Joe's allegations are not plausible because the logos at issue here are fundamentally dissimilar, both visually and in meaning. [00:17:37] Speaker 02: And you must take the logos as a whole. [00:17:40] Speaker 02: You cannot engage in dissection under trademark rules. [00:17:45] Speaker 02: As the district court ruled, no reasonable consumer would believe that the Trader Joe's United campaign items were products from the grocery corporation. [00:17:55] Speaker 03: So, counsel, it's a little bit unusual to see this resolved at a motion to dismiss stage, at least on the likelihood of confusion side of things. [00:18:04] Speaker 03: Because you do have, and I did see the side by side with the tote bags, the red lettering that's very similar to the Trader Joe's red lettering, and the circles, and you have reusable tote bags. [00:18:15] Speaker 03: Why isn't that at least a triable question? [00:18:18] Speaker 03: You know, as a matter of law, there's no likely confusion, especially with a strong mark. [00:18:25] Speaker 03: Didn't the district court jump the gun a little bit there? [00:18:28] Speaker 02: No, absolutely not, because these logos are so dissimilar. [00:18:32] Speaker 02: The raised fist is, even in case law, it is a symbol of labor solidarity, and it's a symbol of political justice, Black Lives Matter. [00:18:40] Speaker 02: It's a symbol of racial, economic, social justice. [00:18:43] Speaker 03: But what if Trader Joe's wanted to endorse Black Lives Matter and other types of protests? [00:18:49] Speaker 03: In other words, it seems as if the union is using this mark as a source identifier and so that's where the confusion could be. [00:18:58] Speaker 03: Maybe Trader Joe's, it might be confused that Trader Joe's is endorsing other protests, even if you're right that this is a sign of protest. [00:19:06] Speaker 03: And so at least wouldn't that have needed some more fact finding before being resolved in a motion to dismiss? [00:19:13] Speaker 02: No, because no reasonable consumer would confuse the raised fist with their cheeseboard wine and grapes. [00:19:20] Speaker 04: I'd like to just jump in. [00:19:21] Speaker 04: The reasonable consumer test under our well-established case law is a question of fact. [00:19:27] Speaker 04: What a reasonable consumer would or would not do in response to advertising is decided to have been a question of fact. [00:19:34] Speaker 04: Usually not, as Judge Sanchez said, decided on the papers. [00:19:39] Speaker 02: That's correct, Your Honor. [00:19:40] Speaker 02: Usually not, but in these kinds of cases where it's exceptionally meritless and taking both logos together... [00:19:46] Speaker 02: in their entirety, it's not plausible to allege anyone would confuse the raised fist with the cheese and grapes and wine. [00:19:57] Speaker 02: And then we go on to look at the name, because you have to look at it all together. [00:20:01] Speaker 02: Trader Joe's United. [00:20:03] Speaker 02: United means the union. [00:20:05] Speaker 02: It's inherently critical of the employer. [00:20:08] Speaker 02: It is an adversarial relationship. [00:20:10] Speaker 02: You take it all together, the raised fist, Trader Joe's united. [00:20:13] Speaker 02: That is the union. [00:20:16] Speaker 02: And it's just not plausible to say anyone would confuse that. [00:20:19] Speaker 02: And that's exactly what Judge Vera saw. [00:20:25] Speaker 04: I'm also a little concerned about the fact that to get to that punch line, mindful that this was a Rule 12b6 motion, Judge seems to have looked at a lot of stuff outside of the complaint about other label disputes and [00:20:37] Speaker 04: I'm having trouble understanding how all that extra outside information would be appropriate in the 12b6 context. [00:20:45] Speaker 02: Well, I believe it's the Knievel case where the court is permitted to look into sources cited in the complaint. [00:20:55] Speaker 02: So Trader Joe's, they do cite the website throughout. [00:20:59] Speaker 02: And what they did was something, you know, they artfully pleaded to only refer to the store. [00:21:04] Speaker 02: But that doesn't disallow the judge from looking at the whole website. [00:21:08] Speaker 03: But didn't the judge not only look at the website, but say, this is what I think a consumer is likely to do, or likely to think, or click on? [00:21:16] Speaker 03: It just, to Judge Ginnotta's point, it seems as if the court was drawing its own inferences, and that seems a little bit beyond the dismissal stage. [00:21:27] Speaker 02: In the VIP versus Jack Daniels case, the court [00:21:32] Speaker 02: acknowledges that where the allegations are so implausible, the court can certainly dismiss on a 12b6. [00:21:38] Speaker 02: And that's what this is. [00:21:39] Speaker 02: That's what this is. [00:21:41] Speaker 02: This was two years of struggle by Trader Joe's United. [00:21:44] Speaker 02: We are winning. [00:21:46] Speaker 02: We are winning sites. [00:21:48] Speaker 02: And when Trader Joe's saw an opportunity to weaken us, to go after the union, to weaponize the federal courts against us, it did so because it's absurd. [00:21:58] Speaker 02: The raised fist and the cheese and crepes have nothing in common and nobody would confuse them. [00:22:04] Speaker 01: Let me ask about the Norris LaGuardia Act. [00:22:06] Speaker 01: How much of an active dispute do you need in your view before that act comes into play? [00:22:13] Speaker 01: How much of the context of this dispute do we have to look at? [00:22:17] Speaker 02: Well, this dispute, and in our briefing, we talked about all the unfair labor practices that Trader Joe's has been found guilty of. [00:22:25] Speaker 02: We talked about how they have fired unionizing leaders, unionizing workers. [00:22:31] Speaker 02: We've talked about how they took away the benefits of stores that did unionize, but allowed those who didn't to keep those benefits. [00:22:38] Speaker 02: I mean, I think that this is overwhelming. [00:22:41] Speaker 02: And I believe the judge said it was undoubtedly a labor dispute here. [00:22:46] Speaker 03: Well, I think I grant you that there is an ongoing labor dispute over those practices. [00:22:52] Speaker 03: What's the connection to selling merchandise to that labor dispute? [00:22:56] Speaker 03: Or is it your view that anytime there's a labor dispute, the union can just sell whatever it wants and infringe on trademarks? [00:23:05] Speaker 02: It's my view that there was no infringement here, because again, we're talking about a raised fist. [00:23:10] Speaker 02: No, I know. [00:23:11] Speaker 03: But I'm trying to understand the Norris LaGuardia Act application. [00:23:15] Speaker 03: And so at a threshold level, just because there's an ongoing labor dispute doesn't necessarily mean that the union can sell merchandise. [00:23:25] Speaker 03: Why is this a different situation in your mind that makes this part of an ongoing labor dispute or arising out of an ongoing labor dispute? [00:23:34] Speaker 02: Well, I think what I'm understanding is if we're putting aside the total dissimilarity here. [00:23:40] Speaker 01: Yes. [00:23:40] Speaker 01: Yes. [00:23:42] Speaker 03: Let's assume you're infringing. [00:23:44] Speaker 01: Right. [00:23:44] Speaker 01: Assume that they're very similar and that everybody's confused when they see the raised fist back. [00:23:53] Speaker 02: Assuming that we took, assuming that the logos were similar, could a union sell merchandise? [00:24:02] Speaker 03: No. [00:24:05] Speaker 03: So the Norris LaGuardia Act prevents a court from entering an injunction to stop union activity. [00:24:12] Speaker 03: The question here is, can that union activity encompass selling merchandise that infringes on the company's mark? [00:24:21] Speaker 03: And does the Norris LaGuardia Act apply in that circumstance? [00:24:26] Speaker 02: So the Norris-LaGuardia Act is going to be a separate analysis than the Infringement Act. [00:24:32] Speaker 02: And I understand that that's true, and like the district court did, it needs to do both analyses. [00:24:38] Speaker 02: So that's true, yes. [00:24:40] Speaker 03: But the court said, but I guess just to be more specific, the court said that one can, that he is precluded, the district court is precluded from entering an injunction under the Norris-LaGuardia Act. [00:24:51] Speaker 03: So my question is, why is that so if it's about selling merchandise on the union's website? [00:24:59] Speaker 02: So my understanding is that the Norris-LaGuardia Act inquiry is, was there a labor dispute? [00:25:06] Speaker 02: Is this arising out of a labor dispute? [00:25:08] Speaker 02: And we talked about the vast evidence that shows this truly comes from a labor dispute. [00:25:13] Speaker 02: So that's set aside. [00:25:14] Speaker 02: No, there's no injunction because it came out of a labor dispute. [00:25:18] Speaker 02: And then the court does have to move on and look at the Lanham Act where it found total... But why? [00:25:23] Speaker 01: Because it would seem under the district court's reasoning that if it's arising out of a labor dispute, if the labor dispute is the crux of the controversy, then the court can't enter an injunction [00:25:37] Speaker 01: I mean, I think that that's the district court where the district court was going. [00:25:43] Speaker 01: It sounds like you don't agree with that. [00:25:44] Speaker 01: It sounds like in your view, you have to go on and still, I don't know what actual work that Norris-LaGuardia Act would be doing in your view. [00:25:53] Speaker 02: I think I do agree with you that, and I forgot to reserve a couple minutes, two minutes, that the Norris-LaGuardia Act, if it arises out of a labor dispute, then the district court cannot enjoin the activity. [00:26:06] Speaker 02: But the district court must go on to apply the Lanham Act. [00:26:11] Speaker 01: Okay. [00:26:11] Speaker 03: All right. [00:26:13] Speaker 03: And talk about the dilution claim. [00:26:16] Speaker 03: I'm having a hard time seeing how nominative fair use enters into the picture here, so can you explain to me why that was appropriate to do? [00:26:22] Speaker 03: And I take it the parties never briefed this issue, so maybe you don't want to defend it, but what did the district court get this part wrong? [00:26:31] Speaker 02: The nominative [00:26:33] Speaker 02: So first of all, blurring has to consider similarity. [00:26:37] Speaker 02: And we've discussed how completely dissimilar these logos are. [00:26:42] Speaker 02: Nominative fair use does come into play here because Trader Joe's United is using the name Trader Joe's to identify the employer, to identify the labor dispute. [00:26:54] Speaker 02: And we can do that. [00:26:55] Speaker 02: We can certainly use it because [00:26:58] Speaker 02: Inherent in the raised fist and the name Trader Joe's United is criticism of the employer. [00:27:04] Speaker 02: And we have to identify the employer. [00:27:07] Speaker 02: Case law allows the union to use the name of the employer. [00:27:11] Speaker 02: Trader Joe's does not even dispute that we can use the name of the employer. [00:27:15] Speaker 02: They're saying, well, you can't use it if you're selling something. [00:27:19] Speaker 02: But they're not recognizing the district court's obvious conclusion, in my view. [00:27:27] Speaker 02: that the logos were so dissimilar that there's no infringement. [00:27:30] Speaker 03: But, you know, I mean, would you agree that the cases that the court cited that were out of circuit, some of those cases are making a distinction between using a name for organizing activity and selling things. [00:27:43] Speaker 03: So, I mean, if we were to agree with you, it seems like we would be the first court to do that, wouldn't we? [00:27:49] Speaker 02: But we're not using the logo. [00:27:52] Speaker 03: You're not. [00:27:52] Speaker 03: So I guess here's my question. [00:27:54] Speaker 03: Why isn't Trader Joe's union using the marks for as a source identifier saying we are the union itself and we're using these tote bags, which is what Jack Daniels said was the central concern of the Lanham Act for infringement. [00:28:11] Speaker 02: So and in the Jack Daniels case, the dog toy company conceded [00:28:16] Speaker 02: that it was using the mark as a mark, right? [00:28:18] Speaker 02: It was using Jack Daniel's mark as a mark. [00:28:22] Speaker 02: We don't concede that. [00:28:23] Speaker 02: We're not using Trader Joe's to mark our products to somehow refer to this tote bag came from Trader Joe's. [00:28:30] Speaker 02: I mean, we have a raised fist and we have the word united. [00:28:33] Speaker 02: And we cannot ignore the totality of that. [00:28:37] Speaker 02: Saying Trader Joe's united, you know, they cited this case Davis versus Blue Wave, right? [00:28:43] Speaker 02: Where it's a book and a movie gringo and gringo is the title of the book in the movie now imagine if it was first of all a book and [00:28:51] Speaker 02: and a union, right? [00:28:53] Speaker 02: And the book was called Gringo, and the union was called Gringo's United. [00:28:57] Speaker 02: The word united changes everything, right? [00:29:01] Speaker 02: And you put that together with the fist, and there's no escaping that. [00:29:07] Speaker 02: Trader Joe's United means a political movement, means a social or labor justice movement, and means a union. [00:29:14] Speaker 02: and so therefore these things are so dissimilar that their worlds apart and then when you pair that with the With the history of unfair labor practices and worker retaliation we can see exactly what this is You have a few minutes left if you want to cover anything else but [00:29:41] Speaker 02: I will reserve my time. [00:29:43] Speaker 03: Thank you so much. [00:29:44] Speaker 03: You don't have a cross appeal, do you? [00:29:47] Speaker 03: Then there's no reserving of time. [00:29:48] Speaker 03: It's now or never. [00:29:56] Speaker 02: So I will point out as well that the other sleek craft factors go in our favor, right? [00:30:02] Speaker 02: You cannot buy our tote bag, our tote bag, which is campaign related merchandise, which is for the union, which is to convey the struggle of the union. [00:30:15] Speaker 02: You can't buy it in a store. [00:30:17] Speaker 02: You can only buy it online. [00:30:19] Speaker 02: I think the judge was absolutely right. [00:30:22] Speaker 02: when he looked to the website and said, wait a minute, when you look even at that Just the Store website, it says Trader Joe's united, again, united. [00:30:30] Speaker 02: We can't lose sight of the word. [00:30:32] Speaker 02: The district court saw the labor context, and this appellate court can too. [00:30:39] Speaker 02: So when you see TraderJoesUnited.org, any reasonable consumer would understand that that is referring to a union, some social justice movement. [00:30:49] Speaker 02: And again, on that store website, you again have the raised fist. [00:30:53] Speaker 02: And let me talk about the box cutter for a moment. [00:30:55] Speaker 02: The box cutter is what the Trader Joe's workers use to cut boxes. [00:31:01] Speaker 02: It's the labor symbolism there. [00:31:04] Speaker 02: And there's no one who could ever [00:31:06] Speaker 02: Oh, and you brought up the pride issue, so I'm going to go back and let's address some of these things. [00:31:17] Speaker 02: So in a way, saying Trader Joe sucks and Trader Joe's united is the same thing, you know? [00:31:23] Speaker 02: Not that we want a peaceful relationship with the company, but we are inherently critical of it because we're the union. [00:31:30] Speaker 02: And it doesn't have to be that way, but it is under the law. [00:31:36] Speaker 02: I want to talk about the total de minimis impact of these products. [00:31:42] Speaker 02: As far as leave to amend, this is so far off. [00:31:46] Speaker 02: There was no product that they showed that came anywhere close to similarity. [00:31:55] Speaker 02: The cases that they reference go to direct competitors. [00:32:00] Speaker 02: We're obviously not. [00:32:01] Speaker 02: We are the union. [00:32:02] Speaker 02: And I'll end there. [00:32:04] Speaker 03: OK. [00:32:04] Speaker 03: Thank you. [00:32:06] Speaker 03: And we'll give you a couple of minutes. [00:32:10] Speaker 00: Thank you. [00:32:10] Speaker 00: I appreciate it. [00:32:11] Speaker 00: A few quick points. [00:32:13] Speaker 00: First, United does not equal the word Union. [00:32:16] Speaker 00: United means a lot of different things. [00:32:18] Speaker 00: There are soccer teams named United. [00:32:20] Speaker 00: There are charities named United. [00:32:21] Speaker 00: There are political organizations named United. [00:32:24] Speaker 00: They're not one and the same, and United certainly doesn't equal sucks. [00:32:27] Speaker 00: to any reasonable observer. [00:32:30] Speaker 00: The second point is this is not about cheese and grapes. [00:32:33] Speaker 00: It's not about the logo. [00:32:35] Speaker 00: The district court made the same mistake and essentially looked at this as if it did not say Trader Joe's on it, as if literally the only word on there was United and the color and the font. [00:32:44] Speaker 00: And that's not correct either. [00:32:47] Speaker 00: The reality is there are a variety of different tote bag designs. [00:32:50] Speaker 00: We cite some of them are included in the complaint just as examples are at page 203. [00:32:55] Speaker 00: There are more than 50 different tote bag designs that are in circulation at any given time. [00:32:59] Speaker 00: The idea that it's not even plausible to think that someone might be confused about these two bags does not survive the 12b6 inquiry and standard. [00:33:10] Speaker 00: On judicial notice and incorporation by reference, the COJA decision is very clear that you cannot make inferences against the plaintiff based on things outside the record. [00:33:22] Speaker 00: That's exactly what the district court did here on the NLGA. [00:33:27] Speaker 00: I think the key point is it's really premature, honestly, to even engage in this inquiry. [00:33:32] Speaker 00: It's a 12b6. [00:33:33] Speaker 00: We didn't seek a preliminary injunction. [00:33:35] Speaker 00: If you look at the NLGA cases, all of them, I believe, except one, [00:33:39] Speaker 00: came up in the context of a PI or even a permanent injunction. [00:33:44] Speaker 00: And so that is something that doesn't have to be decided today and really shouldn't be on this record. [00:33:50] Speaker 00: And yes, there are ongoing labor disputes, but I think you picked up on the key point, which is the question of whether this grows out of or involves it. [00:33:57] Speaker 00: And the sale of merchandise that says nothing about a labor dispute does not do that. [00:34:02] Speaker 00: Finally and importantly this is a 12b6 It is exceedingly rare to grant a 12b6 motion when it's likely hit a confusion because it's so fact-attensive It is rare still to do so without even giving a one opportunity to amend and so we think this complaint survives on its own Can I ask just to follow up on the NLGA claim well on the NLGA issue? [00:34:31] Speaker 03: I take your point that you haven't filed a motion for a preliminary injunction and perhaps the panel shouldn't speak about it, but the court did say that it would be enjoined. [00:34:39] Speaker 03: I mean, does that, could that have a future effect on you or is it better for us to just stay away from that issue altogether? [00:34:45] Speaker 00: I mean, I would love for the court to explain that the district court's reasoning was incorrect on the NLJ or at least to hint at that so we don't just end up with the same decision later on when we get to the question of whether an injunction is warranted. [00:34:59] Speaker 00: And I think on that maybe the court could just make two key points. [00:35:02] Speaker 00: One is the fact that there's an ongoing labor dispute doesn't mean that this case arises out of or involves a labor dispute. [00:35:10] Speaker 00: But secondly, and I think this is important because it's easy to miss, the inquiry under the NLGA is not just that threshold question, but really the only things that are prohibited, like categorically prohibited, are the enumerated acts that are in 104. [00:35:26] Speaker 00: And the only one anyone talks about is 104E, which is just about publicizing a labor dispute. [00:35:32] Speaker 00: And this is not that. [00:35:33] Speaker 00: And this is another reason why I do think it's premature, because there are other sections that apply that govern when injunctions can be issued. [00:35:41] Speaker 00: But they're all things that happen later on in the case. [00:35:46] Speaker 03: Thank you. [00:35:46] Speaker 00: Thank you. [00:35:47] Speaker 03: Thank you, counsel, for your arguments. [00:35:48] Speaker 03: They were very helpful to us. [00:35:50] Speaker 03: The matter will stand submitted, and court is adjourned.